[1] Requirements and criteria for determining whether a trademark is likely to deceive consumers under Article 7(1)11 of the former Trademark Act

[2] The case holding that in a case where foreign companies Gap, composed of pre-use trademarks Eul, such as table diskettess, sports bags, etc. used and " " " "," and " ", filed a petition for a registration invalidation trial with the Korean Intellectual Property Tribunal on the ground that the registered trademark is likely to cause mistake or confusion between the pre-use trademarks and the source, and that the registered trademark is likely to cause mistake or confusion between the pre-use trademarks and the holder of the right to the registered trademark, and that the registered trademark falls under Article 7 (1) 11 of the former Trademark Act, and the Korean Intellectual Property Tribunal rendered a trial decision cited by the Korean Intellectual Property Tribunal, the registered trademark cannot be deemed as a trademark only for consumers

[1] If a trademark constitutes a trademark that is likely to deceive consumers as prescribed by Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016), it must be known to the extent that the pre-use trademark or the goods used in comparison with the registered trademark or the designated goods are not necessarily required to be well-known, but if a trademark or goods are domestically used, it can be recognized as a trademark or goods of a specific person. In such a case, in light of the fact that a trademark identical or similar to the pre-use trademark is used for the goods identical or similar to the goods using the pre-use trademark, or any trademark is used for the goods identical or similar to the pre-use trademark, or the economic relation between the goods using the pre-use trademark, and other general transaction circumstances, it may only be seen that there are special circumstances to mislead consumers as to the extent that the trademark is used by the right holder of the pre-use trademark to the extent that the goods using the pre-use trademark are not identical or similar goods.

[2] In a case where foreign companies Gap et al. of the pre-use trademarks consisting of the pre-use trademarks such as table diskettess, sports bags, etc. used for the designated goods such as " " "", " "", and ", have caused misconceptions or confusions about the source with the pre-use trademarks against the right holders of the pre-use trademarks such as " "", etc., and thus, there is concern that consumers may be injured, the case holding that the court below erred in the misapprehension of registration by misapprehending that the pre-use trademarks fall under Article 7 (1) 11 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply) and applied for a trial on the invalidation of registration, and it is hard to find that the pre-use trademarks, the main goods of the pre-use trademarks, are the designated goods of the pre-use trademarks, which are the designated goods of the pre-use trademarks, and, in light of the circumstances where the pre-use trademarks were used in relation with the pre-use trademarks, it is not known to domestic consumers.

[1] Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 34(1)12) / [2] Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; see current Article 34(1)12)

[1] Supreme Court Decision 96Hu412 decided Mar. 14, 1997 (Gong1997Sang, 1111) Supreme Court Decision 2009Hu3268 decided Jan. 28, 2010 (Gong2010Sang, 462)

Plaintiff (Patent Attorney Lee Jong-soo, Counsel for plaintiff-appellant)

A. Shakia Shama (Patent & Law Firm Ayang, Patent Attorney Kim-Hy, et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2014Heo2535 decided August 28, 2014

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Based on the following circumstances, the lower court determined that the designated goods of this case (trademark registration number omitted) are “documents bags, handbags, non-metallic metal product wallets, name cards, keyss, strings, air strings, shoulder strings, shoulder strings, shoulder strings, strings, Bostons, and strings (strings)” used as follows in relation to the pre-use trademarks of this case, which consisting of the right side as follows, and constituted only consumer trademark under Article 7(1)11 of the former Trademark Act (wholly amended by Act No. 1403, Feb. 29, 2016; hereinafter the same shall apply).

A person shall be appointed.

A. At least around October 30, 1995, the date of the decision to register the trademark of this case, the pre-use trademarks of this case were known to the domestic users to be recognized as a trademark of a specific person.

B. Since the registered trademark of this case can be abbreviated or conceptualized only with the “BUTTERFLY” portion, the trademark of this case is identical with the pre-use trademarks of this case, and thus its overall trademark is similar.

C. All the designated goods of the registered trademark of this case have a substantial economic relation with the goods used in the pre-use trademarks of this case.

D. Therefore, if the registered trademark of this case is used for the bags or Group A as the designated goods, it may be misunderstood that it was used by the owner of the pre-use trademarks of this case as being used by the owner of the pre-use trademarks of this case to the extent that it was not used for the goods similar to the consignment goods, which are the main goods of the pre-use trademarks of this case, and may cause mistake and confusion as to the origin of the

2. However, the lower court’s determination is difficult to accept for the following reasons.

A. In order to constitute a trademark that is likely to deceive consumers as stipulated in Article 7 (1) 11 of the former Trademark Act, there is no need to recognize the registered trademark or the designated goods, but it must be known to the extent that the trademark or goods are identical or similar to the pre-use trademark so that it can be perceived as a trademark or goods of a specific person. In such a case, a trademark identical or similar to the pre-use trademark is used in the goods identical or similar to the pre-use trademark, or a certain trademark is used in the goods identical or similar to the pre-use trademark, or in light of the specific use condition of the pre-use trademark, the degree of economic relation between the goods using both trademarks, and other general transaction circumstances, etc., it may be deemed that the trademark is likely to cause consumers to mistake or confuse the source, only if there are special circumstances to believe that the trademark is used by the right holder of the pre-use trademark to the extent that it is not used for goods identical or similar to the goods using the pre-use trademark (see, e.g., Supreme Court Decision 2006Hu168.

B. We examine these legal principles and records.

(1) The pre-use trademarks of this case, around October 30, 1995, which was the date of the decision to register the trademark of this case, can be deemed to have been known to the extent that they were recognizable as a trademark of a specific person to domestic consumers with respect to the consignment goods. However, the consignment goods of this case cannot be deemed to have been similar to the bags or walls, which are the designated goods of the trademark of this case, and economic relation is weak.

(2) Meanwhile, in relation to sports bags (referring to bags for sports purposes, not manufactured in line with the size and shape of the table pockets to be suitable for receiving the table pockets), the records reveal only the circumstance that the instant pre-use trademarks attached with the pre-use trademarks were partially imported in Korea until the time of the decision of registration of the instant registered trademark, and that the instant pre-use trademarks, among the pre-use trademarks of this case, were introduced into several co-convenive goods through the table magazine, etc.

(3) Furthermore, the registered trademark of this case and the pre-use trademarks of this case are remarkable differences in appearance as seen below.

(A) The registered trademark of this case is surrounding the shape of "MADM BUTFY", "WEATRAL LESLY" located in other sources, while the part of the registered trademark of this case is much larger than the part of the text, the trademark of this case is considerably located in the center or (pre-use trademark 1) is relatively small on the left side of the part of the word "Butly" (pre-use trademark 3) and the part of the figure is relatively small on the left side of the part of "Butly" (pre-use trademark 3). The pre-use trademark of this case is composed of the pre-use trademark 1 and 3 of this case, which are emphasized more weight than the part of the word "Butly" (pre-use trademark 3 of this case) and the pre-use trademark 2 of this case is composed of English persons without an anticipated figure.

(B) While “the figure “” of the registered trademark of this case expressed Navibin shape in very fact and pattern, it may be deemed that the shapes of the pre-use trademark 1 and 3 of this case and the “brupted” were brupted as brupt, it is very simple, but it is very simple.

(4) As such, it is difficult to view that the pre-use trademarks of this case were widely known to domestic consumers in relation to bags or paper bags, which are designated goods of the pre-use trademarks of this case, and with respect to sports bags. In light of the circumstances where the registered trademark of this case and the pre-use trademarks of this case cannot be seen as being similar to the pre-use trademarks of this case, even if the trademark of this case were to be used only by the “Butly” part of its text, and it is likely that the registered trademark of this case may be abbreviationd or conceptualized, even if it is considered that the trademark of this case is used for bags or paper bags, which are the designated goods of the registered trademark of this case, and that there is no special circumstance to mislead the right holder of the pre-use trademarks of this case as being used by the pre-use trademarks of this case to the extent that it was not used for goods identical or similar to the table goods.

(5) Therefore, in relation to the pre-use trademark of this case, the registered trademark of this case cannot be viewed as a trademark only by the consumer under Article 7(1)11 of the former Trademark Act.

C. Nevertheless, the lower court determined that the registration of the instant registered trademark constitutes Article 7(1)11 of the former Trademark Act and ought to be invalidated. In so doing, the lower court erred by misapprehending the legal doctrine on the trademark only for consumers, thereby failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Sang-ok (Presiding Justice)